The song is cute. The video is cute. The point is valid. Those who own trademarks that are entering the general lexicon should take heed.
It’s been quite some time since I posted to this blog, and I have to come back with a rant.
The Washington Redskins are an NFL football franchise. Nothing more, nothing less. However, their name is evidently a political fireball.
The pro column for changing the name is limited to political correctness, which, I’m sorry, I have a problem with. We can’t call a spade a spade these days without offending someone. I don’t even know if those who are of Native American descent are offended by the NFL’s calling their Washington team the Redskins. Me, I look at it as the team based in our nation’s capital is honoring the Native Americans. But I guess that’s not the politically popular view these days.
The con column for changing the name is legion. The team will have to spend $millions to re-brand itself. The logo will have to be changed. The colors will have to be changed. The stadium and road signage will have to be changed. The direct marketing collateral will have to be changed. And what about all those franchise-specific marketing paraphernalia — the mugs, the hats, the key rings, the sports cards, the kids’ uniforms bearing RG3’s number? Those will all have to be changed. Redskins sports memorabilia bearing the Redskins logo and name won’t exist, and that will do a number on the market for that memorabilia.
Can’t we just call a spade a spade?
THIS is why a trademark search is important BEFORE you invest $millions into branding your product. If you intend to market internationally, get the trademark search done in every country that you intend to market in. And search to register in the correct category or categories….
iPhone can’t be iPhone in China. There’s a Chinese company that has registered the mark in the telephones category (Apple owns it for hardware and software). That, folks, is about 1/4 of the world’s population to which Apple cannot market under the current name of the product without going through some sort of legal maneuvering (getting the existing Chinese mark invalidated or reaching some sort of deal with the mark’s owner).
Best laid plans….
ICANN is planning to do something very strange next year.
We’re all used to .com, .net, .info and the rest of the top-level domains (“TLD”) by now. Well, watch out, world — here come the branded TLDs!! We’ll soon see .ibm, .3m, .delain-law-office. All you need is the $185,000 (a bit more than spare change to a small business person) to purchase the TLD name (which is why you WON’T see .delain-law-office).
As a trademark lawyer who spends time extracting clients from unintended second-level domain name infringements, I can see the trademark knots coming down the pike. Not only will second-level domains get squatted; TLDs will get squatted and sold for $millions.
Amazing. And utterly confusing. Not a good move, ICANN.
Bad news for the home of the Big Mac. As described in this article from the Chicago Tribune, Malaysia does not view “Mc…” as associated with restaurants and food as a prefix to the intellectual property of McDonald’s Corporation.
Unlike the United States, which forced the closure of McBagels based on the use of “Mc…” in the food industry being deemed confusingly similar to McDonald’s famous mark, Malaysia has held that McCurry, ostensibly an abbreviation for “Malaysian Chicken Curry” is not rendered confusingly similar to McDonald’s famous mark merely by the addition of the “Mc” prefix.
I don’t know about anyone else, but when I hear that “Mc” in association with food, I immediately think of McDonald’s. I wonder what the Malaysian court thinks of? Actually, I wonder what they were thinking of?
This is good news for trademark owners worldwide. The Singapore Treaty, administered by the World Intellectual Property Organization (WIPO), will open the way for the branded goods industry to register and manage trademark rights cost-effectively and efficiently. The treaty “… standardizes procedural aspects of trademark registration and licensing and enables owners of trademarks and national trademark authorities to take advantage of efficiencies in using modern communications technologies to process and manage evolving trademark rights.” The USA ratified the Singapore Treaty on 1 October 2008.
Australia ratified the treaty on 16 December 2008. Australia was the tenth country to do so; therefore, according to its terms, the Singapore Treaty will go into full effect on 16 March 2009, three months after the tenth ratification. The ratifying nations are:
the Kyrgyz Republic
Over time, other WIPO countries will, we hope, join with these first ten under the Singapore Treaty on the Law of Trademarks to help to standardize trademark law throughout the world and make registration across international boundaries more and more seamless. More information about the Singapore Treaty can be found on the Singapore Treaty’s webpage on the WIPO site.